Yes.  Some of them, in countries where is possible and feasible.

A trademark can reach the state of “dead” in a variety of ways:

  • The registered trademark has been cancelled by a third party within the trademark system.
  •  The registered trademark was not renewed within the required time period.
  • The pending trademark had activity not answered within the required time period, or loses its arguments against rejection.

In some cases, a Petition to the trademark office can be submitted, always with additional fees and often with increased risk, because your brand name is vulnerable when it bears the “dead” designation in the trademark office database.

Therefore, it is possible that a trademark showing a status of “dead” when you do the search, could still end up being “live” and registered only months (or years) later when your trademark application has its first review, which could cause your application problems.  Of course it is impossible to know which trademark owner might take the additional step of filing a Petition, and which will not. 

There is a more direct and useful use for dead trademarks, however, and that is to discern patterns at the trademark office.

Let’s take the term “realtor” in USA.  A direct hit search brings up 135 “live” trademarks...about 30% of which are pending.  Without going into each record individually, this tells us very little.  However, just by changing the formula to show “dead” marks instead, 483 trademarks show up, most of them “dead” without achieving registration.  This search tells us a great deal. 

By looking at the office actions of only 3 recent rejections, one can easily see that there is a pattern by the trademark office to reject new filings with the term “realtor”.  Further research shows that there is also a pattern of opposition filing (and winning), if indeed the trademark makes it past the first review.

I specifically use the USPTO as an example, because it is possible to see both office actions and oppositions filed.  However, I use the strategy of searching dead trademarks whenever that information is available from the trademark office. 

NOTE--I would like to mention the EU, where no first review rejection process exists, that the “dead” trademarks and oppositions filed against them, to be an essential part of well performed search.

 
 
In this difficult small business economy, many trademark owners pursue a strategy of proceeding straight to registration without doing a trademark search first, usually as a budgetary measure.

We certainly understand budgets, but omitting the search before registration is penny-wise and pound foolish, in the words of my mother.

It takes an experienced search strategist to search for all the variations that might cause rejection due to “Confusingly Similar” or “Likelihood of Confusion”.
  • Rejection can be based on phonetic similarities which may be spelled entirely differently:  VIA / VILLA / VIYAH / VEEAW / FIA / FEEYA
  • Rejection can be based on translation similarities, using entirely different words/phrases:  MANNER / WAY / MANERA / MANIERE / METHOD
  • Rejection can be based on word similarities: STREET / BOULEVARD / AVENUE / LANE / PASS
  • Rejection can be based on similarities in coordinated class codes, not only in the exact class code: FOOD ITEMS FALL INTO BOTH 029 / 030  with an additional 6-10 class codes which should be considered in the search as well

Many countries have a free, on-line, searchable database.  These generally return direct hits only, essentially identical matches to the term and class code you enter.  This an excellent place to start your search, but should not take the place of a professionally performed search.

For example, a search in USA on “realtor” returns over 100 “live” trademarks.  On the surface that looks good, “realtor” is considered by most to be a generic term for a one who sells real estate.

However, the trademark search revealed facts never expected…file a trademark application which includes the term “realtor” in the USA, and you’ll most likely find that application facing opposition before it is 30 days old.  This is the kind of fact which would be difficult to ascertain from the free on-line search by a layman, but would be readily apparent in a search performed by a professional.

OTHER GOOD REASONS TO HAVE A PROFESSIONAL TRADEMARK SEARCH

  • The trademark search can also provide good marketing information, such as similar (but not identical) brand names already out there, which might lead a trademark owner to consider modifying the name before launching an international sales campaign. 
  • Some country searches include common law matches as well; another good marketing tool.  A brand can have common law rights even without formal trademark protection.
  • A search can also, in some countries, provide additional insight on potential opposition.  For example; some trademark owners aggressively use Trademark Watching to “police” their own trademarks and actively file oppositions.  This information could be of use to the trademark owner when making a decision on whether “Likelihood of Confusion” exists.  Few like to face the possibility of litigation (and litigation costs) when they have barely entered the marketplace.
  • In some countries, reviewing dead trademarks, not only live trademarks, can provide insight on recent trademark office trends.

Excluding the trademark search performed by a professional is penny wise and pound foolish, and should not be omitted in an international expansion plan.